Appeal No. 94-3222
Application 07/815,630
double-patenting of subject matter claimed in any one or more
of the U.S. patents which have issued from applications for
which
priority under 35 U.S.C. § 120 here is claimed.2
We will allow the examiner of this case to determine in
the first instance the effective filing date of the subject
matter claimed, the scope and content of the pertinent prior
art, compliance with the requirements of the second paragraph
of Section 112, compliance with Section 101 and the first
paragraph of Section 112, and patentability of the claimed
subject matter under 35 U.S.C. § 102, under 35 U.S.C. § 103,
and over subject matter claimed in commonly assigned patents
absent the filing of effective terminal disclaimers. For this
panel to review the merits of the examiner’s decision
rejecting the claims on appeal under 35 U.S.C. § 101 and under
35 U.S.C. § 112, first paragraph, at this time without those
preliminary determinations having been made by an examiner is
2 The examiner may wish to consider obviousness-type
double-patenting issues. However, take note that if questions of
obviousness-type double patenting of subject matter claimed in
issued patents come to light, the examiner may want to consider
whether adhering to unpatentability determinations under 35 U.S.C.
§ 101 or 112, first paragraph, for lack of utility is consistent
with the presumption of validity of the patented subject matter.
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